No “Do-overs”: The Importance of Correctly Identifying Goods/Services in a Trademark Application
Since our last blog post, we’ve been on the lookout for other cautionary tales that highlight some basic aspects of trademark and copyright law. Sadly, it didn’t take long, as highlighted in a recent post from The TTABlog® addressing the importance of getting your description of goods/services right.
The application at issue was for the mark PITCHINGSMART and listed the services [for which registration was sought] as “entertainment in the nature of baseball games,” though the Applicant actually meant to apply for different services. After immediately discovering the error post-filing, the applicant, who did not actually offer “baseball games” services, sought to amend the list of services several times, attempting to cover the originally-intended services (which were services related to baseball and softball training systems and seminars). Although the decision addresses additional issues, for our purposes the main “take-away” is…
You can amend your goods/services to be narrower, but not broader. The ID of goods/services that is submitted with a trademark application becomes the outer bounds of the goods/services that the application (and any resulting registration) may recite. Any later amendments (whether due to a USPTO requirement or at the applicant’s initiative) can clarify or narrow the originally-filed ID, but they cannot broaden it. In the case discussed above, educational/training services were properly viewed as not being encompassed by or a subset of the original “entertainment in the nature of baseball games” services. Thus, the applicant’s proposed amendments were not accepted, and the applicant was unable to produce a specimen showing its mark in use with the original, incorrect services. In all likelihood, the application will now need to be abandoned, and a new application will need to be filed if the applicant wants to cover the correct services.
Although broad ID language is frequently used in an application (at least initially), there may be strategic reasons not to do so, and applicants must be mindful that there are no “do-overs” when it comes to a description of goods/services like the one featured in this case. The case highlights the importance of working with an experienced trademark attorney before an application is filed, to ensure that the broadest possible coverage is obtained, balanced against other factors such as existing third-party registrations and the ability to eventually show actual use of the mark with the applied-for or desired goods/services.